Cyber Squatting
Add an article Back to list
A major problem surrounding domain names is the activity known as
cyber-squatting. This began almost as soon as the internet took off as a
commercial entity, individuals and organisations that had no rights in a
particular well known trade name would register appropriate domain names
compromising of the trade name before the legitimate owner could do so. The so
called ‘cyber-squatter’ would then approach the legitimate trader and ask for
large sums of money in payment for the registered domain name. The courts have
showed a willingness to allow actions for passing off and trade mark
infringement in such ‘cyber-squatting’ cases , but equally they have accepted
that there may be more than one party with a legitimate claim to the same domain
name see for example the cases of MBNA , FCUK , easyjet and Phones 4u .
So with a degree of confusion within the court system the industry has
developed its own processes for dispute resolution. The major dispute resolution
procedure used as an alternative to litigation in relation to domain name
disputes is the Internet Corporation for Assigned Names and Numbers (ICANN)
Uniform Domain Name Dispute Resolution Policy (UDRP), which is administered by
WIPO (World Intellectual Property Organisation).
ICANN was introduced in 1998 and in the following year 1999 developed and
implemented the UDRP in order to save costs and time in international domain
name disputes. The UDRP sets out certain circumstances in which domain name
disputes will be subject to mandatory administrative proceedings. Unlike
traditional arbitration UDRP has no binding effect other than on the registrar
of the domain name in question, in effect the UDRP creates a contract between
the parties. ICANN’s policy and procedures are incorporated into a subscribers
internet registration agreement this has the effect that by making a complaint
to ICANN the complainant automatically enters into arbitration proceedings.
Proceedings under UDRP are carried out by four approved bodies: WIPO (Word
Intellectual Property Organization), NAF (National Arbitration Forum), CPR
(Institute for Resolution) and ADNDRC (Asian Domain Name Dispute Resolution
Centre). Various countries around the world also use derivatives of the UDRP for
their own domain name levels for example Nominet in the UK.
Any person (or entity) may make a complaint under UDRP to one of the above
bodies via email or hard copy (this flexibility is one of the benefits of the
dispute resolution), there is no requirement for legal representation (lowering
costs) and except in special circumstances there is no physical hearing instead
the process is ‘paper-based’ this saves considerable time and expense and
bearing in mind the international context of the internet is the only feasible
way. When issuing the complaint it is for the complainant to chose whether the
case is to be heard by a panel of one or a panel of three, this is one of the
major criticisms of the process as it is considered that the three member panel
is fairer but the costs become higher. It is up to the complainant to show the
following:
- A domain name is either identical or confusingly similar to a trade mark
this includes both registered and unregistered ‘common law’ trade marks ,
- The holder of the domain name has no rights or legitimate interest in the
domain name .
- The domain name has been registered and is being used in bad faith (for
example selling it for a price exceeding the registration cost .
All of which must be included within the initial complaint and are subject to
a word / page count of between 3,000 and 5,000 words or 10 pages. Upon the
receipt of the complaint the respondent has 20 days to issue their response
showing the opposite to that of the complaint, following which the panel will
issue its decision 14 days after forming unless the parties agree prior
settlement. The panel must make a decision based upon UDRP rules and any law
deemed appropriate, if both parties are based in the same country then this will
be the rules and principles of the national legal system, as such any court
decisions of the relevant country will have to be taken into account. The panel
has the power to cancel an infringing trade mark or transfer it to another
party, UDRP does not provide for fines or punitive damages.
Dispute resolution has various benefits in comparison to engaging in
litigation: it is quick in comparison to litigation (procedures take place in
the form of written submissions) theoretically cases last between 47 and 57
days, cheap (the fees vary but are between $1500 and $5000, compare this to
court proceedings which could cost a small fortune in solicitors fees alone) and
they are expeditious (the majority of cases are finalised within two or three
months compared to potentially a number of years where court proceedings are
involved) enforcement of the panels’ decisions is also a very quick process and
provides a major breakthrough especially where undeveloped or insecure countries
are concerned.
Ben Evans is an Intellectual
Property Executive at Lawdit.
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
